Richard Lindner et al.

Patent Trials and Appeals Board

Oct 17, 2019

13417815 - (D) (P.T.A.B. Oct. 17, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/417,815 03/12/2012 RICHARD LINDNER 008585.015US2-SD 9202
39564 7590 10/17/2019
FisherBroyles, LLP - MAIN CN
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30326
EXAMINER
RIVERA, JOSHEL
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
10/17/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@fisherbroyles.com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD LINDNER and STEPHEN VINCENT GEARHART

Appeal 2018-003011
Application 13/417,815
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 16.2 An oral hearing was held on
September 24, 2019.3 We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Envirosight LLC. Appeal Br. 2.
2 The Examiner entered Appellant’s amendment canceling all claims except
claims 1 and 16. (Advisory Act. 1.)
3 A written transcript of the oral hearing will be entered into the record
when the transcript is made available.

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Application 13/417,815

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We AFFIRM, but denominate our affirmance as a new ground of
rejection.
The following rejection is presented for appeal:
I. Claims 1 and 16 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Zenbayashi (US 4,350,548, issued Sept. 21, 1982)
in view of Glombitza (US 2009/0092173 A1, published Apr. 9, 2009),
Kleinerman (US 5,499,313, issued Mar. 12, 1996) and Sakado (JP 08-
042750, published Feb. 16, 1996).
Appellant’s invention relates to a system and a method of curing a
cured-in-place liner within a tube, the tube having a bottom, a first
longitudinal end, a second longitudinal end, and a length between the first
and second longitudinal ends. (Spec. ¶ 20.) Claim 1 is illustrative of the
subject matter on appeal and is reproduced below:
1. A method of curing a cured-in-place liner within a tube, the
tube having a bottom, a first longitudinal end, a second
longitudinal end, and a length between the first and second
longitudinal ends, the method comprising:
placing one and only one optical fiber in a substantially
straight line along the bottom of the length of the tube , the
optical fiber having a first end, a second end, and a length
between the first and second ends;
coupling the first end of the optical fiber to a distributed
temperature sensing unit; and
measuring the temperature of the optical fiber
continuously along its length via distributed temperature
sensing using the distributed temperature sensing unit,
wherein only the temperature at the bottom of the tube is
measured.

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Application 13/417,815

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OPINION
We have reviewed each of Appellant’s arguments for patentability.
We sustain the Examiner’s rejection for the reasons expressed by the
Examiner. We also add additional reasoning which we denominate as a new
ground of rejection.
The Examiner found the combination of Zenbayashi in view of
Glombitza, Kleinerman, and Sakado describes a system and a method of
curing a cured-in-place liner within a tube, the tube having a bottom, a first
longitudinal end, a second longitudinal end, and a length between the first
and second longitudinal ends as required by claims 1 and 16. (Final
Act. 3–10.) The Examiner found Glombitza describes:
a method for monitoring the state of a sleeve for lining a system
of pipes or conduits (Abstract), by using distributed temperature
sensors (paragraph 32) that comprises placing one and only one
optical fiber within the tube (Figures 1a, 2 and 4 item 3 and
Figure 6 item 64), the optical fiber having a first longitudinal
end, a second longitudinal end and a length between the first
and second longitudinal ends and measuring the temperature of
the optical fiber continuously along its length (paragraph 89). It
can be seen in Figures 1a, 2, 4 and 5a that the optical fiber
(items 3 and 61) is located along the bottom of the tube
segment.
Additionally Glombitza teaches extending the optical
fiber beyond the end of the tube (Figures 2 and 4 item 3).
(Final Act. 4.)
Appellant does not contest the Examiner’s reasoning for combining
the teachings of Zenbayashi, Glombitza, Kleinerman, and Sakado.
Appellant limits the arguments for patentability to the disclosure in
Glombitza. (Appeal Br. 3–5.) Appellant argues Glombitza does not
disclose a method and system for monitoring curing temperature of a liner
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Application 13/417,815

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using one and only one fiber that runs along only the bottom of the tube as
required by claims 1 and 16. Also addressing claim 1, Appellant argues
Glombitza’s figures describe configurations in which multiple stubs for
gathering data are located at multiple circumferential points along the pipe
and therefore Glombitza does not disclose one fiber along the bottom of the
tube as claimed. (Appeal Br. 4–5.)
In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” since “[c]laim interpretation, . . .
will normally control the remainder of the decisional process.” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567–68 (Fed. Cir. 1987); see
also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s
arguments fail from the outset because, . . . they are not based on limitations
appearing in the claims.”).
We find from the record that the transitional phrase “comprising” in
claims 1 and 16 is entitled to its customary usage in claim interpretation,
thus opening the claimed method and system to include unspecified,
additional steps and components. See, e.g., Vehicular Techs. Corp. v. Titan
Wheel Int’l, Inc., 212 F.3d 1377, 1383 (Fed. Cir. 2000); In re Baxter, 656
F.2d 679, 686–87 (CCPA 1981) (“As long as one of the monomers in the
reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
Claim 1 is directed to a method that requires “placing one and only
one optical fiber in a substantially straight line along the bottom of the
length of the tube” and claim 16 is directed to a system that requires “one
and only one optical fiber disposed along essentially only the bottom of the
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Application 13/417,815

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pipe.” The broadest reasonable interpretation of the identified claim
language only requires placing a single optical fiber along the bottom of the
tube/pipe. The claim language is only describing the optical fiber that is
located at the bottom of the tube/pipe. The transitional term “comprising”
opens claims 1 and 16 to include additional optical fibers for gathering data
located at multiple circumferential points along the pipe so long as a single
optical fiber is disposed along the bottom of the tube/pipe as specified by
claims 1 and 16.
The location of the optical fiber within a tube/pipe would have been
obvious to a person of ordinary skill in the art. Glombitza teaches the
optical waveguide (OWG) can be embedded in the pipe as an OWG sensor
fiber 64 and is arranged depending upon the configuration of the conduit.
(Glombitza ¶ 93.) Consequently, a person of ordinary skill in the art
following the teachings of Glombitza would have had sufficient skill to
determine the appropriate location of the optical fiber within the tube/pipe,
including placing a single optical fiber along the bottom of the tube/pipe.
Appellant’s arguments regarding the additional optical cable disclosed
by Glombitza are not persuasive of a patentable distinction. (Appeal Br. 5.)
Appellant has not disputed that Glombitza discloses an optical fiber disposed
along the bottom of the pipe. A person of ordinary skill in the art who did
not desire the information provided by the use of multiple optical fibers—
provided for gathering data located at multiple circumferential points along
the pipe—would have sufficient skill to exclude the additional optical fibers
and the additional information associated therewith. See In re Larson, 340
F.2d 965, 969 (CCPA 1965) (Omission of additional framework and axle
which served to increase the cargo carrying capacity of prior art mobile fluid
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carrying unit would have been obvious if this feature was not desired.); see
also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (deleting a prior art
switch member and thereby eliminating its function was an obvious
expedient). As such, a person of ordinary skill in the art only interested in
the temperature at the bottom of the tube would have had sufficient skill to
utilize the temperature observed by the single optical fiber at the bottom of
the tube.
Thus, we sustain the Examiner’s rejection of independent claims 1
and 16.
CONCLUSION
The Examiner’s rejection is affirmed.

DECISION SUMMARY
In Summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed New
Ground
1, 16 103

Zenbayashi,
Glombitza,
Kleinerman,
Sakado
1, 16 1, 16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Section 41.50(b) also provides:
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When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED; 37 C.F.R. 41.50(b)